## United States Court of Appeals for the Federal Circuit

2005-1253 LAWMAN ARMOR CORPORATION, Plaintiff-Appellant,

v. WINNER INTERNATIONAL, LLC

and WINNER HOLDING LLC, Defendants-Appellees.

Roberta Jacobs-Meadway , Ballard Spahr Andrews & Ingersoll, LLP, of Philadelphia, Pennsylvania, filed a combi ned petition for panel rehearing and rehearing en banc for plaintiff-appellant. With her on the petition we re Lynn E. Rzonca and Corey Field . Of counsel on the petit ion was David P. Gordon , Gordon & Jacobson, P.C., of Stamford, Connecticut. Philip J. Moy, Jr. , Fay, Sharpe, Fagan, Minnich & McKee, LLP, of Cleveland, Ohio, filed a response to the petiti on for defendants-appellees. With him on the response was Jude A. Fry

. Christopher V. Carani , McAndrews, Held & Malloy, Lt d., of Chicago, Illinois, filed an amicus curiae brief for the American Intellect ual Property Law Association. With him on the brief was Melvin C. Garner , President, American Intellectual Property Law Association, of Arlington, Virginia. Perry J. Saidman , SAIDMAN DesignLaw Group, of S ilver Spring, Maryland, filed an amicus curiae brief for the Indust rial Designers Society of America. Christopher J. Renk , Banner & Witcoff, Ltd., of Chic ago, Illinois, filed an amicus curiae brief for NIKE, Inc. With hi m on the brief was Erik S. Maurer . Also on the brief was Robert S. Katz , of Washington, DC. Appealed from: United States District Cour t for the Eastern District of Pennsylvania Senior Judge Robert F. Kelly

## United States Court of Appeals for the Federal Circuit

2005-1253 LAWMAN ARMOR CORPORATION, Plaintiff-Appellant,

v. WINNER INTERNATIONAL, LLC

and WINNER HOLDING LLC, Defendants-Appellees. ON PETITION FOR PANEL REHEARING AND REHEARING EN BANC Before MICHEL, Chief Judge , NEWMAN, MAYER, LOURIE, RADER, SCHALL, BRYSON, GAJARSA, LINN, DYK, and PROST, Circuit Judges

. O R D E R A combined petition for panel rehearing and rehearing en banc was filed by the Appellant 1 , and a response thereto was invited by the court and filed by the Appellees. The petition for rehearing was referred to the panel that heard the appeal, and thereafter the petition for rehearing en banc , response and amicus curiae briefs were referred to the circuit judges who are authoriz ed to request a poll whether to rehear the appeal en banc. A poll was reque sted, taken, and failed. Upon consideration thereof, IT IS ORDERED THAT:

1 Amicus curiae briefs were filed by: 1- The American Intellectual Property Law Association. 2- The Industrial Desig ners Society of America. 3- NIKE, Inc.(1) The petition for panel rehearing is denied in a separ ate opinion iss u ed simultaneously. (2) The petition for rehearing en banc is denied. (3) The mandate of the court will issue on Ju ne 7, 2006. NEWMAN, Circu it Ju dge , diss ents in a se parate opi nion, in which RADER, and GAJARSA, Circuit Judges join. NEWMAN, RADER, and GAJARSA, Circuit Judges , would rehea r the appeal en banc.
F O R T H E C O U R T

_ May 31,2006

____ s/Jan Horbaly

___ Date Jan Horbaly C l e r k

cc: Roberta Jacobs-Meadway, Esq. Philip J. Moy, Jr., Esq

. Christopher V. Carani, Esq. Perry J. Saidman, Esq. Christopher J. Renk, Esq.

2005-1253 2

## United States Court of Appeals for the Federal Circuit

05-1253

LAWMAN ARMOR CORPORATION, Plaintiff-Appellant,

v. WINNER INTERNATIONAL, LLC and WINNER HOLDING LLC, Defendants-Appellees.

NEWMAN, Circuit Judge , with whom RADER and GA JARSA, Circuit Judges , join, dissenting from denial of the petition for rehearing en banc

.

The panel, responding to the petition requesting rehearing, 1 has denied the request and reaffirmed its position that a point of novelty in a design patent cannot be a combination of known design el ements; that is, a design patent is not valid if it is a combination of known design elements, even if the combination is novel and the design viewed as a whole meets the crit eria of unobviousness. This view of design patent law is contrary to the weight of Federal Cir cuit precedent and, as the several amici curiae point out, will have a seriously adverse effect on desi gn patent law. My c oncern is the court's

1 Amicus curiae briefs in support of granting the petition were filed by the American Intellectual Property Law Associat ion, the Industrial Designers Society of America, and Nike, Inc.05-1253 2 inaction in recognizing our obligation to provi de consistent patent law that can be relied on by inventors, patentees, the Patent and Trademar k Office, and the trial courts of the nation. The panel holds that design patents are not considered from the viewpoint of the design as a whole, and that a novel combination, based on "the overall appearance of a design . . . cannot itself be a point of novelty." Maj. op. at 3. This statement is contrary to many cases in the court's precedent; for exampl e, Litton Systems, Inc. v. Whirlpool Corp ., 728 F.2d 1423, 1444 (Fed. Cir. 1984) ("The novelty of the '990 patent consists . . . of the combination on a microwave oven's exterior of a three-stripe door fr ame, a door without a handle, and a latch release lever on the control panel ."); Avia Group Int'l, Inc. v. L.A. Gear California, Inc. , 853 F.2d 1557, 1565 (Fed. Cir. 1988) (the poi nt of novelty of the design of the shoe upper was "the combinat ion of saddle, eyestay and per forations"); L.A. Gear v. Thom McAn Shoe Co. , 988 F.2d 1117, 1124, 1126 (Fed. Cir. 1993) (the point of novelty resided in the "overall appearance of the combi nation" although all of the elements of the design were found in the prior art). Facially conflicting statements we re made in the Sun Hill Industries and Winner International cases cited by the panel. Sun Hill Indus ., Inc. v. Easter Unlimited, Inc. , 48 F.3d 1193 (Fed. Cir. 1995); Winner Int' l Corp. v. Wolo Mfg. Corp. , 905 F.2d 375 (Fed. Cir. 1990). These cases too have been relied on by various trial courts, adding to the confusion. These conflicts of law cannot be re conciled. This court has the obligation to resolve such direct conflicts when they arise. Instead, the panel has reaffirmed its holding that a design patent is not valid if it is a combination of known design elements, even when the combination is novel and distinctive. Indeed, the panel's new statement, ante at 3, that05-1253 3 the panel "did not intend to cast any doubt" on prior contrary decisions, shows that we recognize that prior statem ents of law are in conflict. The patentability of a design is determined on st atutory criteria, as for all patents. The protocol called "point of novelty" has oft en aided the analysis of the application of these criteria to designs, but it is not a different concept from patentabilit y based on the invention -- the design -- as a whole, and has not replaced the statutory pr ovisions. Contrary to the panel's view, the overall appearance of a des ign can indeed be novel, and can indeed constitute the patentable novelty. The amicus curiae point out that many, if not most, design patents are novel combinations of known design elements, and that recognition of a design's overall appearance can constitute a point of novelty, in the usage that has evolved in design patent law. The Patent and Trademar k Office grants design patents on this basis. As the amici point out, the panel's decision can have highl y disruptive consequences. I am concerned lest the design patent law be placed in unpredictable limbo, for many if not most design patents are novel combinati ons of known design element s, and design patents are examined and granted on this rationale. If in fa ct the majority of judges on this court prefers that design patent law be as now stated by this panel -- that a design patent cannot be based on the overall design appearance of a novel combination of design elements; that the overall design cannot be a "point of nov elty" and thus cannot be infringed -- we should take the case en banc and issue a consistent statement of law, overruling whatever body of precedent is negated.